By Suzanne Hof - November 16 2012

Pfizer Canada Inc. (Pfizer) has asked the Supreme Court of Canada to reconsider its decision to invalidate their Canadian Patent No. 2,163,446, the patent that provided Pfizer with a monopoly for its multi-million dollar erectile dysfunction drug, Viagra.

Pfizer has taken the position that the Court “accidentally granted a remedy in this appeal that exceeds its jurisdiction.”  The proceedings in question were initiated as an application under the Patented Medicines (Notice of Compliance) Regulations, the outcome of which is typically not to determine invalidity or infringement, but rather to determine whether a notice of compliance should or should not be granted.  

In the present case, the present proceedings were initiated as an application for an order prohibiting Teva Canada Limited from obtaining a notice of compliance for its generic version of Viagra.  Pfizer has therefore taken the position that the Supreme Court was acting outside its jurisdiction in its finding of invalidity.  

In particular, Pfizer has applied for an order to amend the Supreme Court’s recent judgment “by replacing the words ‘and Patent 2,153,446 is declared void’ with the words ‘the application below is dismissed and the Order of the Federal Court dated June 18, 2009, prohibiting the Minister from issuing notice of compliance to the appellant is hereby set aside’.”  In the alternative, Pfizer has applied for a re-hearing on the issue of remedy.

We will, of course, be following these proceedings and posting updates.

The read the previous article on this please visit: If There is No Quid Then There Can Be No Quo - Pfizer's Viagra patent invalidated by Supreme Court of Canada

If you have any questions please contact Suzanne Hof